Neal & Massy Holdings Limited v. Gregory Ricks
Claim Number: FA1403001549327
Complainant is Neal & Massy Holdings Limited (“Complainant”), represented by Sheryl De Luca of Nixon & Vanderhye P.C., Virginia, USA. Respondent is Gregory Ricks (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <massy.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2014; the National Arbitration Forum received payment on March 18, 2014.
On March 20, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <massy.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 25, 2014.
On April 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant has used the NEAL & MASSY GROUP mark since as early as the mid 1990’s.
Respondent’s <massy.com> domain name is confusingly similar to Complainant’s NEAL & MASSY GROUP mark.
Respondent has no rights or legitimate interests in the <massy.com> domain name. Complainant has neither licensed nor authorized Respondent to use any part of the NEAL & MASSY GROUP mark. Complainant’s use of its mark precedes Respondent’s registration of the <massy.com> domain name on September 25, 1999. Respondent has made no legitimate or fair use of the disputed domain name. Respondent’s website resolves to a website containing links to a business operated by third-parties offering various goods and services associated with shoes and hotels.
Respondent registered and is using the <massy.com> domain name in bad faith.
Respondent is offering to sell the disputed domain name via a click-through link. Complainant offered to purchase the domain name for $1,000 and then again for $10,000. Respondent is attempting to sell the disputed domain name for an excessive price. Respondent admits to being involved in numerous UDRP proceedings for the other domain names it has registered. Respondent is attempting to either disrupt Complainant’s business or to divert traffic for its own gain. Respondent has used a privacy service to conceal its identity.
Respondent was aware of Complainant and Complainant’s mark when it registered the <massy.com> domain name.
Respondent contends as follows:
Respondent’s <massy.com> domain name is not identical or confusingly similar to Complainant’s previously used trademark.
Respondent has rights and legitimate interests in the <massy.com> domain name. Complainant has failed to provide anything indicating that Respondent has no rights or legitimate interests.
Respondent has used the <massy.com> domain name for the last 14.5 years.
Respondent did not register the <massy.com> domain name in bad faith. Respondent was unaware of Complainant when it registered the disputed domain name until February 5, 2014. Complainant made a series of offers for the disputed domain name. Complainant’s first offer was for $300, followed by a $1,000 offer and then an $800 offer. On February 10, 2014 Respondent received another $1,000 offer from Complainant.
In the late 1990s, Respondent registered as many dictionary words as it could, later including the dictionary word Massy.
Respondent requests a finding of reverse domain name hijacking.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
Respondent has been subject to various prior UDRP proceedings.
Respondent uses the <massy.com> domain name to capitalize on the trademark value of the related advertisements and is not seeking to host advertisements that rely on the descriptive value of the phrase “massy.”
Regarding reverse domain name hijacking, Complainant brought its complaint in good faith because the domain name is confusingly similar to a dominant portion of a mark in which Complainant has shown rights.
Complainant owns common law trademark rights for the NEAL & MASSY mark.
Complainant filed an “intent to use” trademark application with the USPTO for MASSY on March 14, 2014.
Complaint filed its Complaint on or about March 18, 2014.
Complainant has no trademark rights in MASSY.
Respondent is not authorized to use Complainant’s NEAL & MASSY trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in its NEAL & MASSY mark.
Respondent offered to sell the at-issue domain name to Complainant for an amount in excess of its relevant expenses.
Respondent uses the <massy.com> domain name to address a website that that appears to be unrelated to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant presents the Panel with sufficient evidence to show it has common law trademark rights in the NEAL & MASSY mark to demonstrate its has rights in a mark pursuant to Policy ¶4(i). See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (finding that complainant established common law rights in its mark by providing evidence of complainant’s popularity and success). Moreover, Respondent does not dispute such rights. However with regard to MASSY standing alone, Complainant only claims in passing that it has commonly been referred to as MASSY. Without more, Complainant’s bald assertion does nothing to demonstrate it has trademark rights in that mark.
Furthermore, although not disclosed in either party’s papers the Panel notes that Complainant filed an “intent to use” (ITU) application for MASSY with the USPTO only four days before it filed its Complaint. See Trademark/Service Mark Application, Principal Register Serial Number: 86221184, (http://tsdr.uspto.gov/documentviewer?caseId=sn86221184&docId=APP20140318073255#docIndex=0&page=1, April 11, 2014). In filing the ITU application Complainant thereby admits that it has not yet used the MASSY mark in commerce, but instead intends to use the mark at some point in the future. See 15 U.S. Code § 1051(1)b. The unavoidable conclusion that Complainant had no rights in MASSY when it filed its Complaint is further supported by the fact that Respondent registered the at-issue domain name over 14 years before Complainant’s UDRP filing but Complainant did not complain about the <massy.com> domain name until now.
Notwithstanding the forgoing, Respondent’s <massy.com> domain name lacks the term NEAL and the ampersand “&” in Complainant’s NEAL & MASSY trademark, but features the mark’s MASSY component. The necessary generic top-level domain “.com” completes the domain name. Removing words and adding a top-level domain name to a complainant’s mark are generally insufficient alterations to avoid a finding of confusingly similar. Therefore the Panel concludes that the at-issue domain is confusingly similar to Complainant’s NEAL & MASSY mark under Policy ¶4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also, Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also, PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant fails to meet its burden.
Complainant contends it neither licensed nor otherwise authorized Respondent to use its NEAL & MASSY mark or any part of such mark. However as discussed above Complainant admits thought its ITU trademark application that it has no rights whatsoever in MASSY, despite having used the NEAL & MASSY mark prior to the time Respondent registered the at-issue domain name. “Massy” is a dictionary word as Complainant concedes, and no license would normally be needed to use the term unless the term acquired distinctiveness. Complainant’s ITU application puts that contingency to rest. Additionally, the fact that Complainant took no action concerning the at-issue domain name for over 14 years suggests that Complainant long believed Respondent was within its right to use the dictionary word component of the NEIL & MASSY mark in its domain name. Complaint’s UDRP filing thus appears to be motivated not so much by Complainant’s conviction that the domain name offends its NEIL & MASSY trademark as by Complainant’s continued desire to secure <massy.com>, the domain name that best maps to its anticipated MASSY trademark.
Given the foregoing, the Panel concludes that Complainant fails to make out a prima facie showing that Respondent lacks rights and interests in respect of the at-issue domain name and thus Complainant does not meet its burden under Policy ¶4(a)(ii).
Finally, since Respondent has rights or legitimate interests in the <massy.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel need not consider Respondent’s bad faith under Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent requests a finding of reverse domain name hijacking against Complainant. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”). On the one hand, it appears that Complainant’s filing was motivated not by any real desire to protect its NEIL & MASSY trademark but rather to acquire a domain name to support Complainant’s inchoate MASSY trademark application. On the other hand, Complainant prevails under Policy ¶4(a)(i) and it is not apparent from the record that Complainant knew or should have known to a reasonable certainty that the Complaint would fail under either Policy ¶(a)(ii) or ¶(a)(iii). On balance the Panel finds that Complainant did not engage in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <massy.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: April 12, 2014
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